Insights For R&D On The US Patent Reform Bill By Robert Stoll
Newlogic is a management consultancy to R&D executives. So we think a lot about how the processes of R&D organizations operate. We’ve been wondering how R&D processes are going to change because of the US Patent Reform bill of 2011. So I’ve been conducting a number of interviews with industry colleagues, and writing a series of articles about Patent Reform, R&D and product development.
I decided to interview Bob Stoll, who is a new partner in the Drinker Biddle & Reath’s (link: http://www.drinkerbiddle.com/) Intellectual Property Practice Group., Mr. Stoll, is the former U.S. Patent Commissioner. Chatting during our interview he suggested that while the act wasn’t perfect, which Act is? He said, “The act is taking the system into the 21st century, and will stimulate economic growth and invention.” Here’s the rest of the interview.
John: R&D organizations are concerned with technology strategy, that process of determining which projects to develop based on the company’s business strategy. Given that what organizational changes do you think R&D organizations should make to prepare for the US Patent Reform bill?
Patent Reform At The University Of Hawaii Tech Transfer Office
Patent Reform will be rolling forward for the next few years culminating in the implementation of the final provisions on September 16th 2013. The USPTO announced some new rules about prior user right, so not only do we have to learn and consider what are the effects of patent reform will be on the R&D organization, but results will only become apparent over time.
Lee Marvin Taylor is a Specialist, in the Entrepreneurship Program (COE) for Technology Liaison at the University of Hawaii. Following my interview with Melba Kurman, I was introduced to Lee as running a top University Tech Transfer office in the US. He graciously answered my questions, and also asked Eric Cohen, Intellectual Property Attorney, at Brinks Hofer Gilson & Lione to clarify a point.
John: What steps has your college taken to prepare for the America Invents Act?
Lee: The deadline is March 16th of 2013, and we are really kind of business as usual, however we will have to file earlier and more often. The grace period will go away. And so that means that while a good many of disclosures are given to us after publication, many Universities have relied on 102 b for the grace period. This has been the existing M.O. at Universities; professors do the publications, and then go to the tech transfer office. Obviously if it’s a pharmaceutical matter, the professor and the office work harder. Now given the changes to the law the Technology Transfer Office will have to work harder, to get a professor to file before disclosure, because of the loss of US and foreign rights. Our education about the changes will happen in the fall of this year.
Patent Reform’s Effect On The University Tech Transfer Office & R&D Organizations
Melba Kurman is my next interview subject for my blog series on Patent Reform and R&D. I found Melba through the series of excellent articles she has written on the topic of Patent Reform and Universities. Melba Kurman is a strong advocate of both the value of university innovation, as well as the value of updating and evolving how university inventions are brought to market. Her insights and analysis arise from first-hand experience working inside a university technology transfer office and before that, in a large technology company. She is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.
John: What organizational changes do you have to make to prepare for patent reform?
Melba: The unit that manages patents -- the technology transfer office in the case of a university -- will have to think through whether it can afford the time and cost of getting a provisional patent on most newly submitted inventions. If a university is going to make the commitment to patenting more of its inventions, then many universities will need to make changes to their tech transfer workflow and budget allocations. In terms of outreach, technology transfer staff should reach out to university researchers to make sure that researchers understand that there’s a weakened grace period, and that they should submit new inventions as soon as they can.
Brad Barbera On What Patent Reform Means For Product Development
Patent Reform approaches, actually, it is already here given that some of the provisions are already in place, and product development managers need to be thinking about its consequences. That’s why I chose to reach out to Brad Barbera, who is the Executive Director of the Product Development and Management Association, he has been in his current role at the PDMA for about 9 months, but has a 15 year background with the association and over twenty years in the field of product development. Brad and I recently chatted about the issue of Patent Reform and product development.
First, however, Brad had a disclaimer: “I am not a lawyer, we do not have a staff PDMA IP lawyer, and I have not sought specific advice in this area. Everything is based on what I’ve read, and my own personal speculation.”
John: What steps has your association taken to prepare product development members for the America Invents Act?
Brad: We are trying to understand the act; I’m contacting IP lawyers, planning on webinars and in-person presentations at both the international and local levels. But I see that there’s an 18 month window here, where there’s a lot to still be settled, as not all the rules are written. So here at the PDMA we are interested in understanding the implications and helping our members operate effectively in the new system. My biggest single concern is that the rules are going to get in the way of innovation, more than they are going to help.
Rebecca Oesterle: Energizer Case At Structural Packaging Summit
The “Structural Packaging Summit,” will be kicking off in only a couple of months. As Newlogic’ President, Marc Drucker, continues to review patent reform and it’s relation to the future of packaging the rest of Newlogic is hard at work reviewing upcoming presentations.
Rebecca Oesterle has worked at Energizer for 26 years and is currently the manager of global packaging development at Energizer Holdings. Rebecca will be presenting “Case Studies in Success: The Easy-Open Battery Package,” which describes the collaboration with Tegrant to develop an EZ Turn and Lock battery blister package for hearing aids.
History of R&D Outsourcing
When was R&D First Outsourced?
Outsourcing of R&D began on a small scale prior to the 1970s and 1980s. There are examples of R&D outsourcing dating back as far as the 1500’s with Italian Renaissance artist Michelangelo, who set up a network of specific suppliers to provide the materials and skills he needed to create his work.
More recently, the 1930’s saw companies in the United States were contracted to conduct R&D on the government’s behalf. During that same decade, the largest American and European firms performed 7% of their R&D functions abroad. This number has been steadily rising since the 1960’s, when a sample of 32 multinational companies were conducting 6.2% of R&D abroad, and by 1995 the number had risen to 25.8%.
During the 1990s, as a consequence of globally distributed R&D networks, R&D outsourcing began to rapidly expand. The explosion of outsourcing innovation was additionally facilitated by a number of other factors such as improved intellectual property rights and changes in trade and investment governance.
3 Issues R&D Leaders Face When Outsourcing R&D Projects
There are many aspects of outsourcing innovation that companies and R&D leaders need to consider. After having looked at several reasons for outsourcing R&D projects, as well as a handful of risks of outsourcing, Newlogic now turns our attention to some of the issues outsourcing brings about that R&D need leaders.
How to Make Selections For Outsourcing R&D Projects
One of the things an R&D leader will be called upon to do is make selections on which projects to pursue. The R&D leader will have delegation over both in-house and outsourced projects, at least to some extent. The R&D director needs to be able to recognize in which areas the company does and doesn’t have competencies. The tasks the company performs well should remain in-house, while the tasks that the company does not do, cannot do, or isn’t as good as it could be, should be outsourced. Vivek Wadhwa of techcrunch.com says that innovation of core products should not be outsourced because the developers of these innovative technologies need to simultaneously interact with each other and their potential consumers, something made more difficult through an outsourcing of this process.
Responsibility and Control: 5 Challenges of Outsourcing Innovation
R&D outsourcing is a business practice widely used by many companies across many industries across the world. A few days ago, we addressed seven reasons why a company might choose to outsource R&D. However, although outsourcing innovation can be hugely beneficial to all involved companies, the move to do so is not without its share of risks.
Structural Packaging Summit 2012
The “Structural Packaging Summit,” is nearly here (February 28th – March 1st) and Newlogic’s own, Marc Drucker, will be presenting on patent reform and the effect it will have on packaging R&D.
Marc Drucker will present, "Are You Prepared for the Effect that Patent Reform Laws Will Have on Packaging R&D?" Key takeaways include, first to file, post-grant review, and fee collection; a review of these new rules and what the packaging R&D leader needs to do to prepare. What patent reform means for the framework and process of packaging project design and development. A review of industry leaders and suppliers, providing insights on how the packaging R&D professional can prepare for patent reform. Tools to help manage patent reform for R&D.
Here is a comprehensive list of some of the people and aspects of SPS that will be on display…
Talent Search or Cost Cutting? 7 Reasons for R&D Outsourcing
Outsourcing has become an important tool for most R&D leaders, although outsourcing is often viewed negatively, synonymous with a loss of jobs, R&D leadership and competitiveness in the industry. R&D outsourcing is an important resource utilized by leading R&D organizations to reduce costs, expand capabilities, leverage open innovation, and support broader industry reach. The move to outsource R&D can also be seen as a deliberate step by the company to increase its global market reach. The effects on research and development have been profound, affecting project implementation, organizational structure and strategic management.
There are a number of reasons for the shift from in-house R&D to outsourced research and development, not the least of which is an attempt by companies to cut costs of operation, which is what immediately springs to mind in regard to outsourcing. But there are other reasons a company may choose to outsource innovation.